JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
16 October 2014 (*)
(Community trade mark — Opposition proceedings — Application for Community word mark LINEX — Earlier national word mark LINES PERLA — Relative ground for refusal — Likelihood of confusion — Article 76(1), in fine, of Regulation (EC) No 207/2009 — Article 8(1)(b) of Regulation No 207/2009)
In Case T‑444/12,
Novartis AG, established in Basel (Switzerland), represented by M. Douglas, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Tenimenti Angelini SpA, established in Montalcino (Italy), represented by R. Almaraz Palmero, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 6 August 2012 (Case R 414/2011-4), relating to opposition proceedings between Tenimenti Angelini SpA and Novartis AG,
THE GENERAL COURT (Fifth Chamber),
composed of A. Dittrich (Rapporteur), President, J. Schwarcz and V. Tomljenović, Judges,
Registrar: J. Plingers, Administrator,
having regard to the application lodged at the Registry of the General Court on 8 October 2012,
having regard to OHIM’s response lodged at the Registry of the Court on 22 January 2013,
having regard to the intervener’s response lodged at the Registry of the Court on 23 January 2013,
having regard to the reply lodged at the Registry of the Court on 16 April 2013,
having regard to the intervener’s rejoinder lodged at the Registry of the Court on 12 July 2013,
further to the hearing on 26 June 2014,
gives the following
Judgment
Background to the dispute
1 On 25 February 2009, the applicant, Novartis AG, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 The mark in respect of which registration was sought is the word mark LINEX.
3 The goods in respect of which registration was sought fall within Class 5 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Pharmaceutical preparations, containing lactobacillus acidophilus’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 17/2009 of 11 May 2009.
5 On 31 July 2009, the intervener, Tenimenti Angelini SpA, filed a notice of opposition under Article 41 of Regulation No 207/2009 against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on several earlier rights which were not taken into consideration by the Board of Appeal and on Italian word mark No 1281045 LINES PERLA (‘the earlier Italian mark’), registered on 4 May 2010, following an application for registration filed on 22 November 2007, for the following goods:
– Class 5: ‘Ladies hygienic diaper; hygienic napkins for incontinents’;
– Class 16: ‘Disposable napkins made of paper or celluloid, paper tissues’;
– Class 25: ‘Napkins in the form of underpants’.
7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b), 8(2)(c) and 8(5) of Regulation No 207/2009.
8 On 21 January 2011, the Opposition Division upheld the opposition on the ground that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between the mark applied for and the earlier Italian mark (‘the marks at issue’) in relation to the goods referred to in the application.
9 On 17 February 2011, the applicant filed a notice of appeal with OHIM under Articles 58 to 64 of Regulation No 207/2009 against the decision of the Opposition Division.
10 By decision of 6 August 2012 (‘the contested decision’) and on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, the Fourth Board of Appeal dismissed that appeal. It found that the relevant public was the Italian general public consisting of consumers exposed to health problems while taking the view that their level of attention was high in relation to the goods covered by the mark applied for and higher than the average in relation to the goods covered by the earlier Italian mark. It examined the similarity between the hygienic diapers, in particular ladies’ hygienic diapers, covered by the earlier Italian mark and the pharmaceutical preparations containing lactobacillus acidophilus covered by the mark applied for (‘the contested goods’) and found that those goods were highly similar, since (i) they belonged to the same general category of goods for healthcare, (ii) their purpose was to be used in medical treatments or in surgical operations relating, in particular, to urinary incontinence, and (iii) they could contain lactobacillus acidophilus, a bacterium which is naturally present in the vagina and is beneficial in combatting yeast infections. The absence of that bacillus in that part of the body can be remedied by diapers to which lactobacillus acidophilus is added in order to combat a possible yeast infection. In addition, the contested goods are sold, inter alia, in pharmacies and are targeted at end consumers with health problems linked to urinary incontinence. The visual and phonetic similarities of the marks at issue are average, in particular as a result of the fact that the first four letters of each of the marks at issue are the same. Conceptually, the marks at issue are not similar. As part of the overall assessment of the likelihood of confusion, the Board of Appeal found that the intervener had not proved that the earlier Italian mark had an enhanced level of distinctiveness as a result of the use of that mark, or that the inherent distinctiveness of the earlier Italian mark was average. Having regard to the high degree of similarity between the contested goods, to the high degree of visual and phonetic similarity between the marks at issue and to the average distinctiveness of the earlier Italian mark, the relevant public, despite its heightened level of attention, might assign the same commercial origin to the contested goods if they were marketed under the marks at issue.
Procedure and forms of order sought
11 By application lodged at the Court Registry on 8 October 2012, the applicant brought the present action. On 22 and 23 January 2013 respectively, OHIM and the intervener lodged their responses at the Court Registry. On 16 April, the applicant lodged a reply and on 12 July 2013 the intervener lodged its rejoinder.
12 By letter of 27 August 2013, the applicant requested that a hearing be held.
13 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
14 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
15 The intervener claims that the Court should:
– dismiss the action;
– order the applicant to pay the costs of the intervener, including in relation to the proceedings before the Opposition Division and the Board of Appeal of OHIM.
Law
16 In support of its action, the applicant puts forward two pleas in law. The first plea alleges infringement of Article 76(1), in fine, of Regulation No 207/2009 and the second alleges infringement of Article 8(1)(b) of that regulation.
17 As both those pleas relate to the same factual issues, the Court considers it appropriate to examine the alleged infringements of Article 76(1), in fine, of Regulation No 207/2009, so far as necessary, as part of the assessment of the second plea.
18 According to Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not be registered if, because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. In addition, under Article 8(2)(a)(ii) of Regulation No 207/2009, the term ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
19 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that same line of case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited). For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).
The relevant public
20 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited).
21 According to the Board of Appeal, the relevant public at which the contested goods were targeted consists of Italian consumers with health problems in general, or health problems related to urinary incontinence.
22 The Board of Appeal, correctly, took account only of Italian consumers, given that the earlier mark is a national mark within the meaning of Article 8(2)(a)(ii) which was registered in Italy. However, as recognised by OHIM at the hearing, the definition provided by the Board of Appeal is imprecise in as much as the ladies’ hygienic diapers marketed under the earlier Italian mark are targeted at Italian women in general, not people with health problems, since the purpose of a ladies’ hygienic diaper is not to treat an illness but to protect clothes and maintain general hygiene during menstrual cycles. Only hygienic napkins for incontinents are targeted at Italian patients suffering from incontinence related problems regardless of gender.
23 By contrast, for the reasons set out in paragraph 46 et seq. below, the mark applied for targets end consumers exposed to risks pertaining to, or disorders of, the gastro-intestinal tract.
24 It follows that the relevant public targeted by both the goods covered by the mark applied for and those covered by the earlier Italian mark consists of Italian women exposed to gastro-intestinal risks or problems and patients of either sex exposed to both gastro-intestinal risks or problems and problems related to urinary incontinence.
25 With respect to the level of attention of consumers of pharmaceutical preparations containing lactobacillus acidophilus, all parties to the present dispute correctly take the view that the level of attention is high. The Board of Appeal, in addition, correctly held that the level of attention of consumers of hygienic diapers is above average, without being contradicted in that regard by the parties.
The comparison of the goods
26 According to settled case-law, in assessing the similarity of the contested goods, account should be taken of all the relevant factors relating to those goods. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).
27 Regarding the assessment of those factors, the Board of Appeal notes that the comparison of the contested goods is a question of law and that it was therefore being called upon to carry out an assessment of the similarity between the relevant goods on its own initiative, so that it could even take account of ‘arguments’ which had not been put forward by the parties.
28 The applicant disputes that approach. According to Article 76(1), in fine, of Regulation No 207/2009, the Board of Appeal is not authorised to take account of facts which have not been raised by the parties. The applicant also casts doubt on the proposition that the Board of Appeal may base a decision on well-known facts.
29 It is apparent from the case-law of the General Court that the criteria for applying a relative ground of refusal, which include the assessment of the similarity of the goods, are part of the matters of law submitted for examination by OHIM and that a matter of law may have to be ruled on by OHIM, even though it was not raised by the parties, if it is necessary to resolve that matter in order to ensure a correct application of Regulation No 207/2009 (judgment of 1 February 2005 in SPAG v OHIM — Dann and Backer (HOOLIGAN), T‑57/03, ECR, EU:T:2005:29, paragraph 21).
30 However and contrary to what the Board of Appeal suggests, that does not mean that OHIM may of its own motion raise facts on the basis of which such an assessment of similarity must be carried out. The system for bringing opposition proceedings on the basis of a relative ground of refusal established by Regulation No 207/2009 is based on the principle enshrined in Article 76(1), in fine, of that regulation, according to which it is for the parties to plead the grounds in support of the relief sought and to provide the facts and evidence relating thereto (judgment of 7 June 2005 in Lidl Stiftung v OHIM — REWE-Zentral (Salvita), T‑303/03, ECR, EU:T:2005:200, paragraph 76). The Board of Appeal may therefore not, merely on the ground that the comparison between the contested goods constitutes a matter of law, examine the underlying legal framework by relying on facts which have not been raised by the parties, although nothing prevents it from taking account of facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (judgment of 22 June 2004 in Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO), T‑185/02, ECR, EU:T:2004:189, paragraph 29), or which stem from the practical experience generally acquired from the marketing of general consumer goods, which facts are likely to be known by any person and are in particular known by consumers of those goods. In such a case, the Board of Appeal is, additionally, not even required to submit examples of that practical experience (see judgment of 3 February 2011 in Gühring v OHIM (Combination of the colours broom yellow and silver grey and combination of the colours yellow ochre and silver grey), T‑299/09 and T‑300/09, EU:T:2011:28, paragraph 36 and the case-law cited).
31 It is in the light of the foregoing that the factors taken into account by the Board of Appeal in the context of its comparison of the goods concerned must be examined.
The distribution channels
32 The Board of Appeal, supported on this point by OHIM and the intervener, held that both hygienic diapers and pharmaceutical preparations containing lactobacillus acidophilus were marketed, inter alia, in Italian pharmacies.
33 The applicant objects to that finding and submits that the Board of Appeal was not entitled to take account of an alleged sale of the above goods in Italian pharmacies, on the ground that no such sale was apparent from the documents submitted by the intervener during the procedure and is additionally not a well-known fact.
34 The Court notes that it is well known that a large number of pharmacies, and not just in Italy, sell sanitary preparations such as dental solutions, toothpaste, toothbrushes, children’s napkins, body lotion, etc., and also hygienic diapers (see, to that effect for the Spanish market, judgment of 7 September 2006 in Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, ECR, EU:T:2006:247, paragraph 37). The great majority of women, not just in Italy, buy them in a pharmacy, when hardware stores or supermarkets are closed or inaccessible. The Board of Appeal was, consequently, entitled to consider that pharmacies not only sold medicine, but also hygienic diapers.
35 Since that fact is well known, the Board of Appeal was able to base its decision on that finding without infringing either Article 8(1)(b) or Article 76(1), in fine, of Regulation No 207/2009. The applicant’s argument that that finding is not well known must therefore be rejected.
The nature of the goods and manner in which they are used
36 The application to register the mark applied for refers to ‘Pharmaceutical preparations containing lactobacillus acidophilus’, which are all goods having a medicinal purpose containing that bacterium, namely, in particular, tablets, capsules, solutions and powders. The goods covered by the earlier Italian mark are ladies’ hygienic diapers, hygienic napkins for incontinents, disposable paper or celluloid napkins, paper tissues and napkins in the form of underpants.
37 The Board of Appeal took the view that the contested goods were highly similar, inter alia on the ground that they belonged to the same category of healthcare goods.
38 The Court notes that, at issue are, on the one hand, medicines to be applied topically or taken orally and, on the other, urine or blood absorbers made of paper, celluloid or plastic to be worn or placed in underpants. It is clear, as submitted by the applicant and recognised by OHIM at the hearing, that the nature and manner in which those goods are used are dissimilar.
39 That finding is not called into question by the intervener’s argument that the contested goods are highly similar in that they belong to two categories, namely ‘pharmaceutical preparations’ and ‘sanitary preparations’, in respect of which the Court has already found a high degree of similarity. It is admittedly true that the Court has already had the opportunity to make a finding as to the existence of a relatively high degree of similarity between, on the one hand, sanitary preparations, which it defined for the purpose of its comparison as ‘sanitary preparations for medical purposes and for personal hygiene’ and, on the other, ‘pharmaceutical preparations’, especially since they have the same purpose, which is ‘for use in medical treatment or in a surgical operation’ (judgment of 15 March 2012 in Cadila Healthcare v OHIM — Novartis (ZYDUS), T‑288/08, EU:T:2012:124, paragraph 44). It should however be noted that, in the judgment in ZYDUS (EU:T:2012:124), the Court conducted a general comparison of those two categories of goods. The Court noted in particular that those goods ‘[were] closely complementary, in so far as certain sanitary preparations for medical use, such as antiseptics or antibacterial lotions, [could] prove to be indispensable when certain pharmaceutical preparations [were] administered’ (judgment in ZYDUS, EU:T:2012:124, paragraph 44). While it is true that two categories of goods defined in very general terms are actually similar where there is an overlap of relevant product lines which bear a certain degree of similarity, it should however be noted that, here, a comparison of very specific products is required, while taking account of their particular characteristics. The fact that those goods belong to very broad categories that are similar overall, namely pharmaceutical preparations and sanitary preparations, does not, as such, make it possible to find that those goods are similar.
The purpose of the goods
40 As to the purpose of the contested goods, the applicant disputes firstly that it follows from the evidence provided that the purpose of lactobacillus acidophilus is to treat incontinence or the urinary tract or vaginal infections that cause it. Secondly, even if that were the case, it is not possible to treat either incontinence or urinary tract or vaginal infections by using a diaper to which active agents containing that bacterium have been added. In addition, no evidence in that regard was submitted by the parties.
41 OHIM and the intervener take the view that the factual analysis carried out by the Board of Appeal is correct; they allege that this is apparent from the evidence provided by the intervener, which is an extract from the website of the University of Maryland (United States) and a description of the Linex Forte drug. They also refer to information taken from the Wikipedia website. Furthermore, the similarity between the contested goods also results from the fact that they are all intended for the care of the body, or for healthcare. The intervener also asserts that the contested goods are complementary. Finally, the arguments submitted by the applicant contradict those which it put forward in another case.
– The therapeutic characteristics of lactobacillus acidophilus
42 With respect to the therapeutic characteristics of lactobacillus acidophilus, the Board of Appeal found that ‘[the contested goods] [had] the same purpose, [namely] their use in medical treatments or in surgical operations and, in particular, with regard to urinary incontinence. As the opponent has evidenced, probiotic supplements containing lactobacillus acidophilus are part of a therapy against urinary incontinence’. OHIM and the intervener are of the opinion that the documents provided are sufficient to justify the finding of the Board of Appeal.
43 It is therefore appropriate to examine whether the documents cited in paragraph 41 above and the extracts taken from the Wikipedia website submitted by the parties at different stages of the administrative procedure and before the Court are sufficient in order to be able to find that lactobacillus acidophilus may be considered a method by which to treat incontinence or urinary tract or vaginal infections resulting in incontinence.
44 As to the finding that lactobacillus acidophilus helps treat incontinence or the infections that cause it, it should be noted that the extract from the University of Maryland website is a text published on the website of the medical centre of the University of Maryland containing six pages of short passages and many keywords. The document appears to be an information leaflet targeted at patients of that medical centre. The document is in English and is entitled ‘Urinary Incontinence’. The first part sets out the symptoms and causes. Next, possible treatments are listed under the heading ‘Treatment options’. Finally, under the heading ‘Complementary and Alternative Therapies’, the document lists under the sub-heading ‘Nutrition and Supplements’ a variety of foods to be avoided or eaten. Finally, under the introductory sentence ‘You can address nutritional deficiencies with the following supplements:’, several vitamins and dietary supplements are listed including the ‘probiotic supplement (containing lactobacillus acidophilus), 5 — 10 billion CFUs (colony forming units) a day, for maintenance of gastrointestinal and immune health’. Other subcategories relating to alternative or complementary therapies refer to herbs, homeopathy and acupuncture. The summary under the heading ‘Following up’ recommends speaking to a personal trainer or doing exercise or following behavioural therapy in order to implement the lifestyle changes suggested in the leaflet. At the end of the document is a bibliography containing 26 scientific articles on the subject. None of the titles of those 26 articles contains the term ‘lactobacillus acidophilus’. In addition, the document does not contain any reference to hygienic diapers.
45 The description of the Linex Forte drug relied on by the intervener and OHIM is a press release relating to that drug published on the Slovenian website www.lek.sl and printed on 16 January 2012. It states that lek, the company on whose website the document was published, is part of the Novartis group. The document states, essentially, that the Linex Forte drug contains a concentration of probiotic bacteria which is 100 times greater than that of the Linex drug, that it contains bacteria from the Lactobacillus and Bifidobacterium families which can treat diarrhoea, flatulence and distension, that it restores the equilibrium of the gut flora and that it avoids the growth of malignant bacteria. There is no reference to incontinence, vaginal or urinary infections, or to hygienic diapers or hygienic napkins for incontinents.
46 The Court notes that it does not appear either from the extract taken from the website of the University of Maryland, or from the description of the Linex Forte drug, that drugs containing lactobacillus acidophilus may be used to treat incontinence related problems. It rather follows from those documents that lactobacillus acidophilus is a stabiliser of intestinal flora, which adds beneficial bacteria to the gut and helps prevent nutritional deficiencies. The use of supplements containing lactobacillus acidophilus is also recommended in addition to a treatment against incontinence in order to improve health, as indeed are various vitamins, fruit and foods. However, lactobacillus acidophilus as such is not considered a medicinal product designed to treat incontinence or urinary tract or vaginal infections which may cause incontinence related problems. The mere fact that that bacterium is recommended in addition to a treatment against incontinence, in so far as its inclusion is recommended in a general change in dietary habits which a patient who suffers from incontinence should make, is not sufficient to allow the conclusion reached by the Board of Appeal that it has a medicinal or therapeutic purpose. Therefore, the documents relied on by the intervener and OHIM do not make it possible to determine that medicines or supplements containing lactobacillus acidophilus should be considered to be intended for treating incontinence or infections giving rise to incontinence-related problems. The Board of Appeal therefore committed an error.
47 In so far as the parties refer to the information taken from the Wikipedia website, the Court reiterates its settled case-law pursuant to which facts alleged on the basis of information taken from Wikipedia must be disregarded since, as it is based on an article from a collective encyclopaedia established on the internet, whose content may be amended at any time and in certain cases by any visitor, even anonymously, such alleged facts are based on information which lacks certainty (see, to that effect, judgments of 10 February 2010 in O2 (Germany) v OHIM (Homezone), T‑344/07, ECR, EU:T:2010:35, paragraph 46, and of 16 November 2011 in Dorma v OHIM — Puertas Doorsa (doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS), T‑500/10, EU:T:2011:679, paragraph 55). The uncertainty of the information from Wikipedia is also highlighted in the case at hand precisely by the fact that the extract taken from that website submitted during the proceedings before OHIM and cited by OHIM at the hearing is worded differently from that provided by the applicant in the annex to its application. In any event, in no way does it follow from the Wikipedia extracts submitted during the proceedings before the Court that drugs or supplements containing lactobacillus acidophilus must be considered to be intended as a treatment for incontinence. Moreover, neither does it follow that the general public thinks that to be the case. Finally, the Court finds that the fact that incontinence may be treated with lactobacillus acidophilus is not well known either.
48 It follows that the therapeutic benefits of lactobacillus acidophilus as a treatment for incontinence may not be considered to be either proven or well known. Therefore it must be considered that ‘pharmaceutical preparations containing lactobacillus acidophilus’ are not connected with the medical treatment for incontinence. The Board of Appeal was therefore not in a position, on the basis of the available evidence, to make a finding that such a link existed. Therefore, the first argument raised by the applicant must be allowed.
– The possibility of releasing lactobacillus acidophilus into the vagina by means of a medicated napkin
49 The Board of Appeal states, in paragraph 16 of the contested decision, that ‘… lactobacillus acidophilus may be currently present in the vagina and have a beneficiary effect to combat yeast infections. The absence of lactobacillus acidophilus in this part of the body can be supplemented by napkins to which this bacillus is added in order to combat an eventual yeast infection’. According to the Board of Appeal, it is therefore possible to release some lactobacillus acidophilus into the vagina using hygienic napkins or diapers in order to balance or increase the natural occurrence of that bacterium in that part of the body.
50 Before considering the merits of that argument, it is first necessary to rule on the admissibility thereof which is disputed by the intervener and OHIM.
51 According to the case-law, no new plea in law may be introduced in the course of proceedings unless it is based on matters of law or of fact which came to light in the course of the procedure, as the first subparagraph of Article 48(2) of the Rules of Procedure provides. In contrast, a plea in law which may be regarded as amplifying a plea previously put forward, directly or by implication, in the application initiating proceedings, and which is closely connected with that plea is admissible (judgments of 26 April 2007 in Alcon v OHIM, C‑412/05 P, ECR, EU:C:2007:252, paragraph 38 et seq., and of 9 September 2010 in British Aggregates and Others v Commission, T‑359/04, ECR, EU:T:2010:366, paragraph 87). While it is true that the applicant clarified its position on the existence of medicated hygienic diapers on the market only in its reply, it did however, in paragraph 37 of the application, dispute that ‘there exist[ed] a connection between the products covered [by] the contested application and sanitary napkins’ and added that ‘[h]owever, as this ha[d] not been proven, the decision must be set aside’. In addition, it states at paragraph 41 of the application that ‘... [OHIM] has failed to take into account that … the case [was] not even concerned with two pharmaceutical preparations but two completely different goods’. It is very clear from those arguments that the applicant disputes the pharmaceutical nature of hygienic diapers and that it considers the inference of a connection between the contested goods to be incorrect. Accordingly, that argument may be regarded as amplifying a plea made previously and is admissible under the first subparagraph of Article 48(2) of the Rules of Procedure.
52 That finding is not affected by the argument raised by OHIM that the applicant did not dispute the existence of medicated diapers before the Board of Appeal. It is apparent from OHIM’s file that the argument about the existence of medicated diapers was not raised by the parties during the opposition proceedings before OHIM. That argument appears for the first time in the decision of the Opposition Division which found only that hygienic diapers may contain medicated substances. Similarly, the intervener reproduces that argument put forward by the Opposition Division in its response before the Board of Appeal. However, neither the division nor the intervener found that hygienic diapers containing lactobacillus acidophilus in order for it to be released into the vagina existed. That connection between napkins and lactobacillus acidophilus was mentioned for the first time by the Board of Appeal in paragraph 16 of the contested decision. Therefore, the applicant was not in a position to take a view on that argument before the Board of Appeal and consequently was entitled to give an opinion thereon before the Court.
53 As to the merits of that argument, the Court notes first that, when the Board of Appeal adopted the contested decision, it had not been established that medicated hygienic diapers existed. It is true that, as noted by the intervener and OHIM, a product referred to as a ‘medicated napkin’ was the subject of an application for registration in a case before the Opposition Division, but that fact, of which the Board of Appeal was apparently not aware when it adopted the contested decision, is not in itself sufficient to prove the existence of medicated hygienic diapers. Moreover, that fact is not at all well known, because, as the applicant correctly explained at the hearing, the relevant public can be aware only of existing products and not those which might theoretically exist one day. Secondly, it has also not been demonstrated, as correctly noted by the applicant, that it is possible to place a bacterium into the vagina by means of a hygienic diaper or napkin. OHIM’s argument at the hearing that it would not be surprising that bacteria, ‘probably living organisms, could find their way into the human body’ from a hygienic diaper is neither supported by any form of evidence, nor well known, as OHIM itself had to admit at the hearing. Thirdly, even assuming that it is possible to release lactobacillus acidophilus into the vagina by means of a diaper or napkin, such a finding would, if it cannot be shown to be well known, have to be supported and cannot, contrary to what the intervener submits, be inferred from the mere fact that it is in principle possible to add any substance to hygienic diapers.
54 However, as has already been stated in paragraph 44 et seq. above, the documents submitted by the intervener do not contain any evidence which allows the conclusion that it is possible to release lactobacillus acidophilus into the vagina by means of a hygienic diaper or napkin. In the absence of evidence to the contrary, it must be held that napkins or diapers containing lactobacillus acidophilus for the purpose of its release into the vagina do not exist. The Board of Appeal therefore should not, on the basis of the evidence available, have found that such a product existed. It follows that the second argument raised by the applicant must also be upheld.
– The other arguments submitted by the intervener
55 The Court observes, in relation to the argument submitted by the Board of Appeal and OHIM that the contested goods are all goods intended for body care or health care, that ladies’ hygienic diapers and hygienic napkins for incontinents do not appear to have the primary objective of caring for the body or improving health, but rather of protecting clothing in cases of incontinence or loss of blood (see, to that effect, judgment in PAM-PIM’S BABY-PROP, paragraph 34 above, EU:T:2006:247, paragraph 37). However, while it cannot be denied that they can also be used for hygienic purposes and thus, rather indirectly and secondarily, in order to ‘car[e] for the body’, that finding can entail only a very low degree of similarity.
56 As to the complementarity relied on by the intervener, it should be borne in mind that goods are complementary where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (see easyHotel, paragraph 19 above, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited). Here, no such connection exists. The use of a ladies’ hygienic diaper or hygienic incontinence napkin does not require or facilitate the consumption of a pharmaceutical food supplement. As indicated in paragraph 46 above, the contested goods are complementary neither for the treatment of incontinence, nor for the treatment of infections giving rise to incontinence related problems. In those circumstances, the contested goods cannot be considered complementary.
57 The argument that the applicant defended a contrary position as regards the similarity of the goods in another case is irrelevant, because its position in that case is not the subject of the present dispute.
Conclusion
58 It follows from all the foregoing that the contested goods are partly marketed in the same outlets. They are dissimilar by their nature and the manner in which they are used and only very slightly similar in their purpose, but are not complementary. In conclusion, the circumstances make it possible for the Court to find only a very low degree of similarity between the contested goods. Accordingly, the Board of Appeal erred in designating the contested goods as highly similar and not as similar to a low degree.
The comparison of the signs
59 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the overall assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).
60 The Board of Appeal, supported on this point by OHIM and the intervener, found that the degree of visual and phonetic similarity was average in so far as the signs coincided in their first letters — ‘line’ — and as a result of the fact that consumers pay more attention to the beginning of a mark. Phonetically, the similarity between the marks at issue is also due to the similar pronunciation of the consonants ‘s’ and ‘x’ in Italian. With respect to conceptual similarity, the marks at issue do not convey any concept.
61 The applicant disputes that assessment. As a result, in particular, of the presence of the letter ‘x’ in the mark applied for and the additional element ‘perla’ in the earlier Italian mark, there are no visual or phonetic similarities. There is no basis for asserting that the word ‘perla’, the second element of the earlier Italian mark, will be completely ignored by the relevant public.
62 With regard to the visual similarity of the marks at issue, it should be noted, first, that they begin with the same letters, namely the group of letters ‘line’, followed by an ‘s’ in the first element of the earlier Italian mark and an ‘x’ in the mark applied for. The mark applied for and the word ‘lines’ are therefore visually similar, even if the letter ‘x’ is a distinguishing feature of the word ‘linex’. Secondly, the earlier Italian mark contains a second element, namely the word ‘perla’ which means ‘pearl’. That element is not negligible in the overall impression produced by the mark and somewhat limits the similarity between ‘lines’ and ‘linex’ but does not neutralise it completely. The marks at issue therefore have a relatively low degree of visual similarity.
63 Phonetically, it must be held that the pronunciation of the LINEX mark and of the word ‘lines’ is similar for an Italian-speaking public for whom the letter ‘x’ is pronounced ‘cs’. In addition, the words ‘lines’ and ‘linex’ are pronounced in Italian in two syllables, the stress being placed each time on the first syllable. However, it is also necessary to consider the second part of the earlier Italian mark, namely the element ‘perla’, which will also be pronounced, as a result of which the Court considers that there is a low degree of similarity between the marks at issue phonetically as well.
64 As regards the conceptual similarity, the conclusion of the Board of Appeal that the marks at issue do not convey a similar concept must be approved, since the words ‘lines’ and ‘linex’ have no meaning in Italian and since ‘perla’ means ‘pearl’ in that language.
The global assessment of the likelihood of confusion
65 The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between the goods may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).
66 The Board of Appeal, challenged by the applicant and supported by OHIM, found that the inherent distinctiveness of the earlier Italian mark was average and that no enhanced distinctiveness because of its use had been established by the intervener. Notwithstanding the high level of attention of the consumers concerned, the strong similarity of the contested goods and the average degree of visual and aural similarity mean that the relevant public might confuse the commercial origin of the goods marketed under the marks at issue.
67 The intervener concurs with the assessment of the Board of Appeal except in relation to the finding that the enhanced distinctiveness has not been sufficiently proven. The intervener states that during the administrative procedure it did show the enhanced distinctiveness arising from the use of the mark.
68 Regarding the inherent distinctiveness of the earlier Italian mark, the assessment of the Board of Appeal must be approved. Indeed, the word element ‘lines’ has no meaning in Italian, while the word ‘perla’ means ‘pearl’ in that language, a meaning which in no way relates to the goods covered by the earlier Italian mark. Each of those elements is therefore, like the earlier Italian mark as a whole, of normal distinctiveness.
69 As regards the argument alleging enhanced distinctiveness due to the use of the earlier Italian mark, the intervener raises no argument of law or fact to support its argument, but simply refers to what ‘was evidenced at the earlier stage of the proceedings’. It is clear from the case-law of the General Court that a mere general reference to the arguments set out in the written pleadings submitted in the course of the administrative procedure does not satisfy the requirements of Article 44(1)(c) of the Rules of Procedure and, therefore, cannot be taken into account (judgment of 31 March 2004 in Interquell v OHIM — SCA Nutrition (HAPPY DOG), T‑20/02, ECR, EU:T:2004:95, paragraph 20).
70 Given that the level of attention of the consumers concerned is high in relation to the goods covered by the mark applied for and higher than average with respect to goods covered by the earlier Italian mark, that the degree of similarity between the contested goods is very low and that the distinctive character of the earlier Italian mark is normal, the degree of visual and phonetic similarity between the marks at issue, which is rather low, is not sufficient to offset the very low degree of similarity of the contested goods. Therefore, the errors that the Board of Appeal committed in the course of the assessment of the similarity of the goods and brands have been reflected in its overall assessment of the likelihood of confusion. In particular, the Board of Appeal could not have found that there was such a likelihood if it had taken into account the very low degree of similarity between the contested goods. It must therefore be held that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009.
71 It follows from all the foregoing that the second plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 is well founded and that, for that reason alone, the Court is required to set aside the contested decision, without it being necessary to consider the other arguments raised by the applicant as part of its first plea.
Costs
72 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM has been unsuccessful, it must be ordered to pay the applicant’s costs, in accordance with the form of order sought by the applicant. The intervener has been unsuccessful and must bear its own costs.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Annuls the decision of the Fourth Board of Appeal of the Office for the Harmonisation of the Internal Market (Trade Marks and Designs) (OHIM) of 6 August 2012 (Case R 414/2011-4);
2. Orders OHIM to bear its own costs and pay those incurred by the applicant;
3. Orders the intervener to bear its own costs.
Dittrich | Schwarcz | Tomljenović |
Delivered in open court in Luxembourg on 16 October 2014.
[Signatures]